The Electronic Frontier Foundation is bringing light to what it calls a "stupefyingly mundane" patent on e-mail technology, given not to a patent troll hiding in a small office but to one of the world's largest technology corporations.

IBM lawyers wrangled with the US Patent and Trademark Office for years over their bizarre and alarming alternative history, in which IBM invented out-of-office e-mail—in 2010. US Patent No. 9,547,842, "Out-of-office electronic mail messaging system" was filed in 2010 and granted about six weeks ago.

Further Reading

The "invention" represented in the '842 patent is starkly at odds with the real history of technology, accessible in this case via a basic Google search. EFF lawyer Daniel Nazer, who wrote about the '842 patent in this month's "Stupid Patent of the Month" blog post, points to an article on a Microsoft publicity page that talks about quirky out-of-office e-mail culture dating back to the 1980s, when Microsoft marketed its Xenix e-mail system (the predecessor to today's Exchange.)

IBM offers one feature that's even arguably not decades old: the ability to notify those writing to the out-of-office user some days before the set vacation dates begin. This feature, similar to "sending a postcard, not from a vacation, but to let someone know you will go on a vacation," is a "trivial change to existing systems," Nazer points out. But patent lawyers have long been able to add trivial features to well-known technology in order to get software patent grants.

Further Reading

Nazer goes on to identify some major mistakes made during the examination process. The examiner never considered whether the software claims were eligible after the Supreme Court's Alice v. CLS Bank decision, which came in 2014, and in Nazer's view, the office "did an abysmal job" of looking at the prior art.

"[T]he examiner considered only patents and patent applications," notes Nazer. The office "never considered any of the many, many, existing real-world systems that pre-dated IBM's application."

Update 3:53 pm: Asked about EFF's criticisms of the patent, an IBM spokesperson said that "IBM has decided to dedicate the patent to the public." The company notified USPTO today that it will forego its rights to the patent.

There are a whole slew of things that I've never even considered as patentable 'inventions'.

Vacation messages existed in the first Internet-connected email system I used in 1983, along with the ability to schedule actions at a future date. Anyone using the system could tell you how to do this without giving it a second thought, or remotely considering it an invention.

If a patent is submitted and later found to be complete bullshit, the patent owner is held liable for ALL revenue (not just profits) they received from that patent via lawsuits, plus interest, plus penalties.

Use that money to invest in a relational database that can be used for free by EVERYONE (from prospective patent applicants to lawyers) to research "prior art" as well as current patents. Then provide a reporting system that allows someone to submit a notice of a current patent potentially being prior art BEFORE it even gets litigated.

For those patents, if found to be BS after all, but no litigation happened at all, there is no penalty, but they can't enforce licensing or pursue litigation in the future,a nd the patent is invalidated.

This idea takes the process of "fixing" the PTO out of the hands of the government (because we know they can't do a fucking thing right) and puts it into the hands of the people involved in the issue. It punishes the patent trolls, and STRONGLY encourages patent applicants to research their patent to make sure it isn't prior art. Toss in some kind of AI one can "consult" to compare the data to determine the likelihood that it would be considered prior art.

PTO sees less BS patent submission because once the patent holders are punished for getting BS patents, they'll be more careful or risk severe financial consequences. (Jail time would be okay if they can't cough up "enough" of the penalties and refunds.)

It wouldn't change the way the PTO does stuff. It would change the way the judicial system approaches patent trolls.

There are a whole slew of things that I've never even considered as patentable 'inventions'.

Vacation messages existed in the first Internet-connected email system I used in 1983, along with the ability to schedule actions at a future date. Anyone using the system could tell you how to do this without giving it a second thought, or remotely considering it an invention.

Yup! I had an automated out-of-office responder attached to my email on the first unix account I ever had, and the interface was ancient and clanky even then. How long has vacation been in unix? It was a standard part of SVR4, so that takes it back at least to 1988. And I would be extremely surprised if it was new then.

The debatable addition is the scheduler, but (besides being able to simply automate vacation with an "at" command in unix which was very common), outlook had that feature for YEARS before 2010. My outlook archive has a canned set of vacation messages going back all the way to the first year we switched to Outlook from DEC all-in-one, 2005.

One thing to keep in mind: when patent lawyers add "trivial features to well-known technology in order to get software patent grants," it makes the patent much less valuable. You can only assert a patent against someone if they practice every feature of at least one patent claim. In the case of this patent, the primary claim specifically recites the advance "postcard" feature, meaning IBM can only sue people who also have that feature. Which, as far as I know, is nobody. So this isn't really a patent on the very idea of out-of-office notifications, it's much narrower. I agree that it's a terrible patent and shouldn't have been allowed, as I don't think adding that trivial feature is enough to distinguish it from existing systems, but it's good to keep in mind that patent claims are frequently far narrower than the patent title or abstract would suggest.

ETA: Here's an example. I could write a patent on the idea of steering a car with a wheel. The title is "Steering Wheel," and the independent claims describe a wheel-shaped object that is twisted to steer the car. The patent office immediately rejects it, as there's tons of prior art. I can respond by amending the claims to say that, in addition to steering the car, the wheel also vibrates as a collision warning, changes color depending on temperature, and molds to my hands (assuming I have support in the patent's specification). The patent office may then determine that one or more of those features aren't shown in the prior art, and allow the whole patent. This is an example of getting a patent by adding "trivial" features to existing technology. But, now that my patent claims recite a vibrating, color changing, molding steering wheel, the scope of the whole patent is limited. My patent title is still "Steering Wheel," and my abstract is probably absurdly vague, but I can't sue Ford unless they start building a vibrating, color changing, molding steering wheel.

For all you armchair patent examiners I've listed the claims below, feel free to show in detail how each of those limitations is taught by the prior art (either in this article or found yourself that has a verifiable date prior to 1/13/2010). If you use more than one reference, don't forget to make a convincing argument on why you would combine those references. I've only included one of the independent claims, but feel free to do them all.

Quote:

1. A method for transmitting availability information in an electronic mail system, said method comprising: receiving, by a first processor of a first system from a user of the first system on a date prior to a start date, a notification that the user is unavailable from the start date to an end date;

in response to said receiving the notification, said first processor activating an availability indicator in the first system, wherein the availability indicator indicates that the user is unavailable from the start date to the end date;

said first processor extracting availability indicator metadata from the availability indicator, wherein the availability indicator metadata comprises the start date, the end date and an availability indicator message pertaining to the user being unavailable from the start date to the end date;

said first processor determining that an e-mail has not been sent from the first system to a receiver in a second system linked to the first system since said activating;

said processor ascertaining whether a current date is prior to the start date and determining, from said ascertaining, that the current date is prior to the start date;

in response to said determining that the current date is prior to the start date and to said determining that the e-mail has not been sent from the first system to the receiver in the second system, said first processor attaching the extracted availability indicator metadata to the e-mail; and

said first processor sending the e-mail with the attached availability indicator metadata to the receiver in the second system.

There are a whole slew of things that I've never even considered as patentable 'inventions'.

Vacation messages existed in the first Internet-connected email system I used in 1983, along with the ability to schedule actions at a future date. Anyone using the system could tell you how to do this without giving it a second thought, or remotely considering it an invention.

I can think of a several ways to implement these ideas without much difficulty. This patent is nothing more than taking a pen-and-paper system and putting it on a computer. But since IBM hasn't been truly relevant for awhile now becoming a patent troll might give them a couple of extra years before they go belly up.

One thing to keep in mind: when patent lawyers add "trivial features to well-known technology in order to get software patent grants," it makes the patent much less valuable. You can only assert a patent against someone if they practice every feature of at least one patent claim. In the case of this patent, the primary claim specifically recites the advance "postcard" feature, meaning IBM can only sue people who also have that feature. Which, as far as I know, is nobody. So this isn't really a patent on the very idea of out-of-office notifications, it's much narrower. I agree that it's a terrible patent and shouldn't have been allowed, as I don't think adding that trivial feature is enough to distinguish it from existing systems, but it's good to keep in mind that patent claims are frequently far narrower than the patent title or abstract would suggest.

Yeah - I think IBM makes a lot of money on patent licensing, and this might not generate much there. But they also get some marketing benefits by saying "We filed over 6,000 patents in the last year alone" kind of BS. I'd guess this kind of filing is along that latter line: they filed it b/c they figured that they could, and it gives one of their researchers another patent notch on their belt, so when they roll him/her out in a sales meeting, "meet Joe Propellerhead, responsible for 59 patents."

(My personal experience with IBM is they flash amazingly smart and creative researchers at you during the sales process, and then you will never, ever see those guys again, while 22 year olds bumble around failing on your work until you fire them..)

For all you armchair patent examiners I've listed the claims below, feel free to show in detail how each of those limitations is taught by the prior art (either in this article or found yourself that has a verifiable date prior to 1/13/2010). If you use more than one reference, don't forget to make a convincing argument on why you would combine those references. I've only included one of the independent claims, but feel free to do them all.

Quote:

1. A method for transmitting availability information in an electronic mail system, said method comprising: receiving, by a first processor of a first system from a user of the first system on a date prior to a start date, a notification that the user is unavailable from the start date to an end date;

in response to said receiving the notification, said first processor activating an availability indicator in the first system, wherein the availability indicator indicates that the user is unavailable from the start date to the end date;

said first processor extracting availability indicator metadata from the availability indicator, wherein the availability indicator metadata comprises the start date, the end date and an availability indicator message pertaining to the user being unavailable from the start date to the end date;

said first processor determining that an e-mail has not been sent from the first system to a receiver in a second system linked to the first system since said activating;

said processor ascertaining whether a current date is prior to the start date and determining, from said ascertaining, that the current date is prior to the start date;

in response to said determining that the current date is prior to the start date and to said determining that the e-mail has not been sent from the first system to the receiver in the second system, said first processor attaching the extracted availability indicator metadata to the e-mail; and

said first processor sending the e-mail with the attached availability indicator metadata to the receiver in the second system.

There are a whole slew of things that I've never even considered as patentable 'inventions'.

Vacation messages existed in the first Internet-connected email system I used in 1983, along with the ability to schedule actions at a future date. Anyone using the system could tell you how to do this without giving it a second thought, or remotely considering it an invention.

I can think of a several ways to implement these ideas without much difficulty. This patent is nothing more than taking a pen-and-paper system and putting it on a computer. But since IBM hasn't been truly relevant for awhile now becoming a patent troll might give them a couple of extra years before they go belly up.

IBM has a market cap of $171 Billion with a revenue of $80 billion and gross income of $40 billion for 2016. I would hardly count that as not being relevant. IBM's main products are corporate solutions, not consumer products. That "Cloud" everyone is always talking about is run by a lot of IMB technology.

--- snip ---ETA: Here's an example. I could write a patent on the idea of steering a car with a wheel. The title is "Steering Wheel," and the independent claims describe a wheel-shaped object that is twisted to steer the car. The patent office immediately rejects it, as there's tons of prior art. I can respond by amending the claims to say that, in addition to steering the car, the wheel also vibrates as a collision warning, changes color depending on temperature, and molds to my hands (assuming I have support in the patent's specification). The patent office may then determine that one or more of those features aren't shown in the prior art, and allow the whole patent. This is an example of getting a patent by adding "trivial" features to existing technology. But, now that my patent claims recite a vibrating, color changing, molding steering wheel, the scope of the whole patent is limited. My patent title is still "Steering Wheel," and my abstract is probably absurdly vague, but I can't sue Ford unless they start building a vibrating, color changing, molding steering wheel.

Wouldn't it be better to expand and then combine the features?Claim N: A vibrating wheel.Claim N+1: A color changing wheel.Claim N+2: A molding wheel.Claim N+3: A vibrating, color changing wheel.

Ad nauseum.

I have noted your explanation in several patents over the years. They also fit with submarine patents, which is how *cough* traditional *cough* patent trolls used to operate (ex: they would file and repeatedly refile until they got a broad patent on some concepts but would sit on them, often for many years, only then would they go after large companies).

The point about the examiner only considering existing patents and excluding real world prior art is a perfect summation of how the patent system at its worst has become the intellectual property equivalent of the Enclosure Acts. It sometimes seems to exist primarily for the purpose of transferring common ideas to private owners.

When I use Outlook, I set an OOO locally on my PC, and my PC communicates same to a corporate Exchange server. If that communication PC-to-Exchange occurs as an email message with an OOO metadata attachment with start/end/availability, then my Outlook/Exchange system arguably reads on independent claims 1, 9, and/or 15.

I don't know enough about Outlook to know how the OOO gets communicated, nor do I know how it operated back pre-2010. Without those details, it would be hard to say if '842 would stand to a challenge.

On the other hand, if Outlook communicates the OOO to Exchange using a start date and number of days within the metadata attachment, or if it avoids using an attachment by embedding start/end/availability into the email itself, or by using some other form of messaging other than email, then Outlook/Exchange probably doesn't read on '842 and I can safely ignore yet another patent whose most obvious purpose is clearly simply boosting a company's total issued patent count.

Oh, good news for a law firm I worked at this summer then. They can now upgrade from Office 2010 because 2013+ is incompatible with a case software* package's Outlook plugin that showed upcoming vacations of anybody in the to: line.

But they also get some marketing benefits by saying "We filed over 6,000 patents in the last year alone" kind of BS. I'd guess this kind of filing is along that latter line: they filed it b/c they figured that they could, and it gives one of their researchers another patent notch on their belt, so when they roll him/her out in a sales meeting, "meet Joe Propellerhead, responsible for 59 patents."

I think you're close, but not so much for marketing or for J.P.'s benefit. I suspect the most tangible benefit of having many patents in one's portfolio is that it eases bulk trades (cross-licensing) between litigants.

--- snip ---ETA: Here's an example. I could write a patent on the idea of steering a car with a wheel. The title is "Steering Wheel," and the independent claims describe a wheel-shaped object that is twisted to steer the car. The patent office immediately rejects it, as there's tons of prior art. I can respond by amending the claims to say that, in addition to steering the car, the wheel also vibrates as a collision warning, changes color depending on temperature, and molds to my hands (assuming I have support in the patent's specification). The patent office may then determine that one or more of those features aren't shown in the prior art, and allow the whole patent. This is an example of getting a patent by adding "trivial" features to existing technology. But, now that my patent claims recite a vibrating, color changing, molding steering wheel, the scope of the whole patent is limited. My patent title is still "Steering Wheel," and my abstract is probably absurdly vague, but I can't sue Ford unless they start building a vibrating, color changing, molding steering wheel.

Wouldn't it be better to expand and then combine the features?Claim N: A vibrating wheel.Claim N+1: A color changing wheel.Claim N+2: A molding wheel.Claim N+3: A vibrating, color changing wheel.

Ad nauseum.

I have noted your explanation in several patents over the years. They also fit with submarine patents, which is how *cough* traditional *cough* patent trolls used to operate (ex: they would file and repeatedly refile until they got a broad patent on some concepts but would sit on them, often for many years, only then would they go after large companies).

You're right, my example is extreme and not the best way to go about it. I don't work in patents anymore, but what I'd do if I wrote that hypothetical patent would be:

When the first rejection comes back, the examiner might say something like: "Claims N, N+1, and N+2 are rejected over the following prior art references [...]. Claim N+3 is allowed as none of the cited references teach or suggest a color changing steering wheel." In my response, I amend claim N to add the color changing language of N+3. Because the color changing feature isn't shown in the prior art, claim N should be allowed, and I get the patent. I can sue anyone who makes a steering wheel that changes colors. If that same manufacturer makes a color changing wheel that also vibrates and/or molds to your hands, I have an even stronger case.

As funny as that is, it's not actually a patent. Google lists it as a "patent application publication," which means it hasn't been allowed by the USPTO or issued as a real patent. The USPTO patent application status page lists it as abandoned.

Sounds like IBM is a company that probably has some unrealistic patent quota on its engineers which wouldn't surprise me. And if you are not working on something that is truely novel, which happens a lot in this business, you start grasping at straws. Wouldn't want to fall behind your peers. Although most companies probably offer some type of compensation, so maybe the employee needed the money.

Sounds like IBM is a company that probably has some unrealistic patent quota on its engineers which wouldn't surprise me. And if you are not working on something that is truely novel, which happens a lot in this business, you start grasping at straws. Wouldn't want to fall behind your peers. Although most companies probably offer some type of compensation, so maybe the employee needed the money.

I know Microsoft offers a cash bonus and extra perks to its engineers for every one of their "ideas" that turns into a filed patent application, regardless of whether that ever turns into a real patent. So it very much incentivizes their engineers to write down every single braindead "idea" they have and send it to Microsoft's internal patent lawyers.

As funny as that is, it's not actually a patent. Google lists it as a "patent application publication," which means it hasn't been allowed by the USPTO or issued as a real patent. The USPTO patent application status page lists it as abandoned.

ETA:

Thanks for the post.

I used the first search result link in post and did not dig deeper That info rested somewhere in the dark corner of my memory, should have search for the actual application.

As funny as that is, it's not actually a patent. Google lists it as a "patent application publication," which means it hasn't been allowed by the USPTO or issued as a real patent. The USPTO patent application status page lists it as abandoned.

ETA:

Thanks for the post.

I used the first search result link in post and did not dig deeper That info rested somewhere in the dark corner of my memory, should have search for the actual application.

No worries . I've always thought that both Google and the USPTO could do a much better job of making it clear when a publication is an issued patent or just a published application.